Raghbir Singh, Vice Chairman - (1.) CM(M) 512/97 has been transferred from the High Court of Delhi in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/135/03.
(2.) First respondent filed an application being application No. 542723 for registration of trade mark word per se 'Arjies' in artistic manner in class 6 in respect of aluminium door and window fittings. First respondent claimed user since 1.9.1990. In the usual course, the mark was published in the Trade Marks Journal No. 1091 dated 22.11.1994 at page 9. Appellants gave their notice of opposition on 17.2.1995. First respondent filed their counter statement on 19.4.1996 and in the usual course evidence was filed by the appellant and the first respondent. The Assistant Registrar of Trade Marks held hearing on 7.5.1997 when the counsel for both the appellant and the first respondent were present. Learned counsel for the appellant based his opposition on the grounds that the first respondent is not the proprietor of the mark in terms of section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) since the mark has been dishonestly adopted. Appellant is the registered proprietor of trade mark 'ARCHIS' under No. 479648 as of 9.10.1987 with the user as from 10.4.1981 for manufacturing and marketing of builders, hardwares made of ferrous and non-ferrous metals. Learned counsel for the appellant based his opposition under sections 11(a), 12(1) and 12(3) of the Act. He also pressed for the dishonesty of the first respondent as having used the word 'R' within a circle in his advertisements even before the final disposal of the application by the Registrar.
(3.) LEARNED counsel for the first respondent submitted before the Assistant Registrar that the word 'ARCHIS' is not an invented word and their impugned mark 'Arjies' is in tune with their trading style, namely, Arjies Aluminium Udyog. He claimed the registration under section 12(3) of the Act. He submitted that the appellant is not using the mark since 1984 and whatever sales he has made those are under a different mark 'CLASSIC'. Assistant Registrar in his order having held that the marks are deceptively similar to each other allowed for registration of the impugned mark under section 12(3) of the Act. He concluded that the first respondent has adopted the mark in a bonafide manner since it is in tune with the trading style of the first respondent. Appellant is not in use of the mark 'ARCHIS' since 1986. So there is a good case for grant of registration under section 12(3) of the Act. IN arriving at this conclusion, he has put heavy reliance upon London Rubber Co. Ltd. Vs. Durex Products 1964 (2) SCR 211.;